Success rode on second section

5th Mar 2019

Kona’s win highlights the importance of pursuing every avenue of opposition, writes Suzan Ure. O/806/18, Kona (Opposition), UK IPO, 14th December 2018.

O/806/18, Kona (Opposition), UK IPO, 14th December 2018

Key points

• Automobiles and bicycles are dissimilar goods under s5(2)(a) and unable to support a likelihood of confusion, but sufficiently connected to create a link in the mind of the relevant public, potentially leading to unfair advantage
• This case highlights the importance of pleading a full case in oppositions

Hyundai sought to obtain registration of the word KONA in relation to automobiles in class 12. However, KONA USA has held UK and EU trade mark registrations for KONA covering bicycles since 1990 and 1998 respectively, and had supporting evidence of use since registration. It opposed the registration on both s5(2)(a) and s5(3) grounds under the Trade Marks Act 1994.

Given the identical nature of the marks, the core question for the s5(2)(a) ground was whether automobiles and bicycles could be considered similar. Following previous case law and EUIPO guidelines, it was found that the goods are dissimilar. The reasoning given was that, although they both provide a mechanism for getting from place to place, automobiles have a more specific purpose, given their speed, the distance they can travel and their ability to carry multiple passengers. Further, the two modes of transport have different methods of propulsion, namely engine versus pedal power, such that, even in the age of e-bikes, they are still considered materially different. 

The methods of use were considered to be neither complementary nor in competition and, despite evidence suggesting commonality of manufacturers and trade channels, they were still not similar and so were unable to support a likelihood of confusion. Thus, the s5(2)(a) ground failed.

The importance of being able to rely on s5(3) therefore came to the fore. Kona USA was able to establish the requisite reputation, despite Hyundai’s arguments that declining sales since the 1990s meant that its reputation was of less significance. The UK IPO concluded that, while Kona USA’s heyday may have been in the mid to late 1990s, this did not impair its ability to possess a qualifying reputation, as its sales of bicycles remains significant. 

And, although bicycles and vehicles were considered dissimilar goods for s5(2)(a) purposes, under s5(3), it was considered that the goods are both forms of transport, and so the difference between them is not as stark as could be the case with wholly unrelated products. Therefore, the relevant public will overlap. 

The conclusion was that a link would be made in the mind of the relevant public and, as a result, unfair advantage would be gained because of the “symmetry between bicycles … and off-road vehicles. They complement each other’s spirit of adventure”. The potential for the public to imagine a tie-in or wonder about the existence of such a relationship would provide a benefit, whether intentional or not. Therefore, the s5(3) ground succeeded and proved to be paramount to the success of the opposition.

Suzan Ure is a part-qualified Trade Mark Attorney at HGF Ltd

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